DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Restriction/Election
Applicant’s election of Group (I), claims 1-9 in the reply filed on 04/23/2026 is acknowledged. Claims 10-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 04/23/2026.
Secondly, Applicant’s election of the acridinium salt with the chemical formula shown in I-01 in the reply filed 04/23/2026 is acknowledged.
Priority
Acknowledgement is made that instant application 18-196,255, filed on 2023, May 11 is a Continuation of PCT/JP2021/042049, filed on 2021, Nov. 16, which claims foreign priority to 2020-191118, filed on 2020, Nov. 2017.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 2023, Jul. 27 and 2024, Oct. 28 is/are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure state is being considered by the examiner.
Claim Interpretation
Based on page 18, lines 6-10 of the specification, the term “halo C1-C6 alkyloxy”, as recited in claim 1 as an R4 substituent, will be interpreted herein as an oxy group substituted with a C1-C6 alkyl group, where the alkyl group is further substituted with one or more halogens. For example, a –OCH2CF3 group.
Claim Objections
Claim 1 is objected to because of the following informalities:
The word “aclidinium” should be rewritten to “acridinium”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 8 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 8 recites the limitation "The acridinium salt according to claim 1, selected from the followings
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." However, the scope of claim 1 does not include compounds wherein the R4 position is substituted with halogen, chlorine, or a leaving group. The scope of the claim includes the following groups at the R4 position: hydrogen, C1-C6 alkyloxy, halo C1-C6 alkyloxy (interpreted above), or C1-C6 alkylamino, none of which encompass a chlorine radical. Therefore, there is insufficient antecedent basis for the above disclosed compounds in the claim.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zibo, et al. (hereafter, Zibo. WO 2020/176804 A1; published 2020, Sept. 03).
Claim 1 recites a genus of acridinium salt of the formula (I):
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. In response to the Election of Species Requirement by the Office, Applicant elected the species I-01, having the structure:
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.
Zibo teaches direct aromatic carbon-oxygen and carbon-hydrogen bond functionalization via organic photoredox catalysts, wherein the photoredox catalyst is comprised of the structure of formula II (Table I, left) (page 85, paragraph 252) and further teaches the specific embodiments Cat-4 (Table 1, center) (Fig. 10, page 13/19) and Cat-8 (Table 1, right) (Fig. 10, page 13/19).
Table 1. Teachings of Zibo
Formula II
Cat-4
Cat-8
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The difference between Cat-4 and the instant application is that Zibo fails to teach a 2,6-dimethoxy substitution on the acridinium core. However, in another preferred embodiment, Zibo teaches acridinium photocatalyst Cat-8, comprising 1,6-dimethoxy substituents. Therefore, by applying KSR prong (B), it would have been prima facie obvious for one skilled in the art to incorporate the 1,6-dimethoxy substituents of Cat-8 onto the unsubstituted acridinium core of Cat-4 with a reasonable expectation of success. Said skilled artisan would have been motivated to make this modification to modulate the reduction potential of the catalyst. For example, Zibo explains that modifications to the acridinium ring itself most directly impacts the reduction potential of the catalyst, wherein introduction of electron withdrawing groups aids in ease of reduction (page 120, paragraph 363).
Zibo also teaches the genus of Formula II, wherein substituent R8c’ is selected from a group consisting of C1-C4 alkoxy (page 85, paragraph 252). As such, the elected specie I-01 is a positional isomer of the combined teachings of Zibo as explained above, that is encompassed by Formula II.
Regarding positional isomers, the MPEP 2144.09 states:
Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). See also In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978)
Thus, any subtle differences that stem between shifting the methoxy groups from the 1 and 6 positions (as in Zibo) to the 2 and 6 positions (as in compound I-01) are irrelevant since the MPEP 2144.09 states, “[c]ompounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977).”
However, MPEP 2144.09 also states:
Homology and isomerism involve close structural similarity which must be considered with all other relevant facts in determining the issue of obviousness. In re Mills, 281 F.2d 218, 126 USPQ 513 (CCPA 1960); In re Wiechert, 370 F.2d 927, 152 USPQ 247 (CCPA 1967). Homology should not be automatically equated with prima facie obviousness because the claimed invention and the prior art must each be viewed "as a whole." In re Langer, 465 F.2d 896, 175 USPQ 169 (CCPA 1972).
Therefore, burden is shifted to Applicant to demonstrate that the 2,6-dimethoxy substitution pattern of compound I-01 elicits a novel or unexpected result over the 1,6-dimethoxy substitution pattern of Zibo to sufficiently establish non-obviousness.
Conclusion
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/P.A./Examiner, Art Unit 1621
/CLINTON A BROOKS/Supervisory Patent Examiner, Art Unit 1621
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